Letourneau v. Clearbrook Iron Works Ltd.

Letourneau v. Clearbrook Iron Works Ltd.
Court (s) Database
Federal Court Decisions
Date
2004-10-14
Neutral citation
2004 FC 1422
File numbers
T-1864-00
Decision Content
Date: 20050211
Docket: T-1864-00
Citation: 2004 FC 1422
BETWEEN:
JOHN LETOURNEAU and
LETOURNEAU LIFE RAIL LTD.
Plaintiffs
and
CLEARBROOK IRON WORKS LTD.
Defendant
AMENDED REASONS FOR ORDER
HARGRAVEP.
[1] Some types of buildings are constructed by casting a re-enforced concrete wall panel on a horizontal slab on the ground and then raising the cured panel into position as a vertical wall. At this point the slab may be used as the base for casting the next panel. In due course a floor or a roof is placed on top of the positioned vertical wall panels. Inherent in any construction is safety of the workers, including preventing them from wandering off the edge of a raised floor or a roof. Here the Plaintiffs present what they believe be a new solution involving portable but securely fixed perimeter rail stanchions, which are the subject of this action.
[2] More particularly, this action involves alleged infringement of a patented rail stanchion for use with modular concrete panel walls, the stanchion being fixed on the exterior of the wall panel, near the top, either by a separate anchor sleeve fitting which is cast into the wall panel, or by being bolted to the wall panel. The stanchion utilizing the sleeve fitting embodies a right angle at the bottom, in order to fit securely into the anchor sleeve or fitting on the wall panel and a dogs-leg offset so that the stanchion holds the cable railings, which it carries, well inside the edge of the roof. When the work on the roof is completed the stanchion may be removed, leaving the anchor socket in place.
[3] These reasons arise out of two motions, heard over the course of two days and subsequently filed law and argument. The Defendant seeks the continuation of the examination for discovery of Mr. John Letourneau, so he may answer various questions, both those which were refused and those which were taken under advisement, provide further documents and give particulars of the first claim of the patent at issue.
[4] The Plaintiffs seek, on their motion, continuation of the examination for discovery of Mr. Noel Schellenberg, of Clearbrook Iron Works Ltd., to deal with undertakings, with questions taken under advisement and to answer questions that were refused. Included among the matters taken under advisement was a request for particulars of the Defendant's denial that Mr. Letourneau was the inventor, which raises an issue of onus on a party attacking the validity of a patent.
[5] The action, which as I say, is for infringement of the Letourneau patent, is also more involved than that. The Defendant, Clearbrook, contends that the patent is invalid, on various grounds and has counterclaimed to allege that the Plaintiffs have made false and misleading statements tending to discredit the business, wares and services of Clearbrook.
SOME GENERAL LEGAL PRINCIPLES
[6] Before turning to the motion of the Defendant and then to the motion of the Plaintiffs, I will set out some applicable basic principles.
[7] Both sides have referred to six general propositions, applying to examination for discovery, set out in Scientific Games, Inc. v. Pollard Bank Notes Ltd. (1997), 73 C.P.R. (3d) 461 (F.C.T.D.) at 468:
1. The test as to production is that of relevancy. Relevancy is a matter of law. Documents which may reasonably be supposed to contain information which may indirectly or directly advance a party's case or damage that of the adversary are relevant;
2. questions that are too general or require an opinion or are outside of the scope of the proceeding need not be answered;
3. the propriety of discovery questions relates to the facts set out in the statement of claim, or the defense, as the case may be, rather than to any facts which a party proposes to prove;
4. answers should not be required to questions which, while they might be relevant, are not likely to advance in any way the questioning party's legal position;
5. the court, before requiring a discovery question be answered, must weigh the probable usefulness of the answer against the time, trouble and difficulty involved in obtaining the answer for one must look at what is reasonable and fair under the circumstances; and
6. fishing expeditions in the nature of vague, far reaching or irrelevant lines of questioning are to be discouraged.
These propositions paraphrase the principles set out by Mr. Justice McNair in Reading & Bates Construction Corp. v. Baker Energy Resources Corp. (1998), 25 F.T.R. 226 (F.C.T.D.) at 230, where a number of cases underlying each proposition are set out.
[8] I would elaborate on the first principle set out above, by adding that a question or document is relevant even though it may only indirectly lead to a train of inquiry as to relevant events: see Nolan v. Silex International Chemical Systems Inc. (1997) 77 C.P.R. (3d) 212 (F.C.T.D.) at 214, relying upon the decision of Justice MacKay in Sydney Steel Corporation v. The Omisalj [1992] 2 F.C. 193 (F.C.T.D.) at 197-198, and Fiddler Enterprises Ltd. v . Allied Shipbuilders Ltd. (2002), 215 F.T.R. 305 at 307, relying upon Compagnie Financière et Commerciale du Pacifique v. Peruvian Guano Company (1882) 11 Q.B.D. 55 (C.A.). Where there is some doubt as to whether or not a question ought to be answered, the benefit of the doubt favours the answer be required; see The Omisalj, at 198-199.
[9] As I indicated earlier one of the issues involves who is entitled to claim as the inventor. Certainly section 43(2) of the Patent Act provides the presumption of validity. This basic proposition is considered at length by President Thorson in McPhar Engineering Co. of Canada Ltd . v . Sharpe Instruments Ltd. [1956-1960] Ex.C.R. 467 at 491-492. President Thorson, in the course of considering an attack on a patent, points out "... the onus of showing that it is invalid lies on the person attacking it, no matter what the ground of attack may be, and that until it has been shown to be invalid the statutory presumption of its validity remains." (page 492).
CONSIDERATION OF CLEARBROOK'S MOTION
[10] I will first deal with the motion of Clearbrook Iron Ltd., which is directed, generally, toward further discovery, questions and particulars, from John Letourneau and Letourneau Life Rail Ltd.
Experience and Background of Mr. Letourneau
[11] At issue in the first category of refusals is the scope of questions which may be asked of a witness as to his or her background. An appropriate starting point is the view expressed by Mr. Justice Rothstein, as he then was, in Merck Frosst Canada Inc. v. Canada (Minister of National Health and Welfare), (1994), 75 F.T.R. 97 (F.C.T.D) at 100:
Under normal circumstances, a descriptive question about a deponent would be asked at the opening of an examination. There is nothing wrong with such questions that seek to identify a deponent or, indeed, shed some light on his or her background, providing the questioning party demonstrates the relevance of obtaining the background or that it is necessary in the context of the issue of credibility. It is not sufficient to say, "We want to know who he is," or "What is his litigation experience?".
Mr. Justice Rothstein elaborates on this concept of asking appropriate questions about the background of the discovery witness, either through demonstrating relevance or through putting the question in the context of an issue of credibility, by pointing out that there must be a
connection between the issues in the case and the background of the witness in order for the question to be proper. However there is substantial scope in this area, including to test whether a person who claims to be the inventor is in fact the inventor, an issue facing Mr. Justice Lemieux in Goldfarb v. W.L. Gore and Associates, Inc. (2001) 11 C.P.R. (4th ) 129 (F.C.T.D) at 154 - 155:
The true inventor
[115] I take from the Privy Council's decision in Canadian General Electric Company v. Fada Radio, Ltd., [1930] A.C. 97 at 101, the following proposition that a true inventor is a person who demonstrates inventive ingenuity. Lord Warrington of Clyffe quoted the trial judge, Maclean J., as follows:
"There must be a substantial exercise of the inventive power or inventive genius, though it may in cases be very slight ... if the invention requires independent thought, ingenuity and skill, producing in a distinctive form a more efficient result, converting a comparatively defective apparatus into a useful and efficient one, rejecting what is bad and useless in former attempts and retaining what is useful, and uniting them all into an apparatus which, taken as a whole, is novel, there is subject matter. A new combination of well known devices, and the application thereof to a new and useful purpose, may require invention to produce it ..."
[116] Justice Strayer's decision in Mahurkar v. Vas-Cath of Canada Ltd. (1988), 18 C.P.R. (3d) 417 (F.C.T.D.), in authority for the proposition that a person's skill and knowledge are relevant in determining whether that person is the true inventor, particularly with respect to inventions of a complex and technical nature. I take from Justice Teitelbaum's decision in Procter & Gamble Company v. Kimberly-Clark of Canada Ltd. (1991), 40 C.P.R. (3d) 1 (F.C.T.D.), the proposition that a person presenting a problem for solution is not an act of invention. There must be evidence that the inventor had a significant role in solving the problem.
This passage had to do with the skill and knowledge of the person claiming the invention, in effect whether that person has the capacity for independent thought, ingenuity and the skill which might allow him or her to exercise inventive power or even, as the Privy Council said in the Fada Radio case referred to by Mr. Justice Lemieux, the necessary inventive genius, to develop the stanchions in question. I now turn to the specific questions asked of Mr. Letourneau bearing on his experience.
[12] Questions 25, 26, 27 and 33 deal with Mr. Letourneau's employment as a bulldozer operator, being when he did that job, for whom he worked, his duties and concluding with question 33, "What would you do in the course of your duties as a bulldozer operator, is there anything else you can say?". Mr. Letourneau did say that as a bulldozer operator he dug excavations, but that is rather removed from anything relevant either to the development of the rail stanchions around the edge of a roof or to the preservation of confidentiality, particularly in that Mr. Letourneau's career as a bulldozer operator was some fifteen years ago. To say, as does counsel for the Defendant, that Mr. Letourneau's experience in construction "casts a gloss on virtually everything he says or did relating to his alleged invention and in his business starting in 1997 going forward.", stretches the bounds of relevance too far, is not likely to advance anyone's legal position and appears to be more of a fishing expedition than anything else. Questions 25, 26, 27 and 33 need not be answered.
[13] By question 39 counsel for the Defendant seeks to determine Mr. Letourneau's work experience before 1981. That may be relevant in determining what skills Mr. Letourneau might have brought with him and put to bear on the stanchion problem. Equally, his previous work experience might not have anything to do with bringing appropriate skills in his role as an inventor, however such basic inquiries are pertinent, even though the answers may not necessarily lead to further proper questions. Question 39 is to be answered.
[14] Leading up to questions 53 and 55, Mr. Letourneau dealt with his acquaintances in the construction industry. At questions 53 and 55 he was asked whether there was anyone else whom he knew in the construction business and the number of such acquaintances. He responded that there were not a lot of such individuals and that "I don't recall all the names of people that I know that are in construction.". Mr. Letourneau goes on to observe that the question seems to cover forty years. Counsel for the Defendant has a reasonable answer and that is sufficient.
[15] At question 65 Mr. Letourneau was asked for his understanding of the term "tilt-up construction". He observed, as paraphrased by the counsel for the Defendant that he "had very little familiarity with tilt-up construction", but defining it as "where they form concrete walls horizontally and they tilt them up with a crane to sort of have this instant wall slab." (answer 69).
[16] Counsel for the Defendant makes the point that tilt-up construction is an important concept and that may be, however the observation as to its relevance, in that the marketing efforts of the Plaintiffs were concentrated on the tilt-up construction industry, leads nowhere in particular, for a whole nature of Mr. Letourneau's device and particularly the cast in place sleeve to support the stanchion, is founded in the idea that the sleeve can be inserted easily into the horizontal concrete slab, before the concrete is set and then the slab panel may be hoisted into place, with the sleeve then in the appropriate position to take the stanchion. However Risi Stone Ltd. v. Groupe Permacon Inc. (1994) 56 C.P.R. (3d) 381 (F.C.T.D.), a decision of Mr. Justice Nadon as he was then, does have some bearing for "The mere fact that a question may seek to elicit an expression of a technical opinion from a witness who is not an expert is not necessarily fatal." (page 388). At this point counsel for the Plaintiffs submits that while there is a denial in the pleadings that Mr. Letourneau is the inventor, there are insufficient particulars. This overlooks the many references to other patents which may well use a comparable mounting device built into a concrete wall. The Defendant is entitled to explore further Mr. Letourneau's knowledge of the term tilt-up construction, including as set out in questions 65, 73, 74 and 75.
[17] Leading up to question 80 Mr. Letourneau acknowledges that he has a workshop at home and then refuses to answer as to the nature of things he did in the workshop. This is an appropriate testing of the skill and knowledge, referred to in Goldfarb (supra), that might be brought to bear on the rail stanchion problem. Question 80 is a proper question so long as the questions and answers are generic enough not to pry into other inventive activities of Mr. Letourneau.
[18] At questions 82 and 85 Mr. Letourneau was asked as to his familiarity with horizontal life lines, essentially the fencing held up by the stanchions. I do not take this as an inquiry into Mr. Letourneau's knowledge as to prior art, or as an irrelevant question going to the issue of validity of the patent, or a question by which to test the extent of common general knowledge: if such were the sole purpose of the questions, the questions would be improper: see for example Unilever PLC v. Proctor and Gamble Inc. (1989) 23 C.P.R. (3d) 279 (F.C.T.D.) at 282 and Westinghouse Electric Corp. v. Babcock and Wilcox Industries Ltd. (1987) 15 C.P.R. (3d) 447 (F.C.T.D.) at 450 and 451, a decision of Mr. Justice Strayer, as he then was. However, the question is relevant to the inventiveness of Mr. Letourneau and again I refer back to Goldfarb (supra) at 154-155. Questions 82 and 85 are appropriate as an inquiry into the inventive skills which Mr. Letourneau brought to bear on stanchion design.
[19] Leading up to question 478 Mr. Letourneau relates a conversation with his brother-in-law who had pointed to a lack of an effective safety rail, for fall protection, on some construction sites and the possibility of an opportunity to solve the problem. That is fair enough. However at question 478 counsel asked whether there was something in Mr. Letourneau's background by which his brother-in-law would characterize him as a clever person. Mr. Letourneau can have no idea what was in the mind of his brother-in-law. Question 478 requires an opinion beyond that which Mr. Letourneau can reasonably advance, without speculation. Question 478 is irrelevant and need not be answered.
[20] Leading up to question 529 the witness recounted a discussion, again with his brother-in-law, about solving the fall protection problem. At question and answer 524 the witness confirms that he has exhausted his memory. The gist of the following question is whether the witness can remember anything further. There is then a discussion as to whether the witness anticipated being asked about the conversation with his brother-in-law, which becomes an incidental conversation between counsel. Counsel for the Defendant has his answer and Mr. Letourneau need not consider that aspect further.
[21] At question 558 the witness is asked whether, aside from his brother-in-law, he knew anyone else involved in the tilt-up construction industry. There follows debate as to whether this question had already been asked. At question 58 the witness had indicated that he had advised of all the people he could remember in the construction industry. At question 59 through 63 the witness dealt with his familiarity with the tilt-up construction industry, being through just his brother-in-law. Question 558 has in fact been answered.
The Plaintiffs' Devices
[22] The Plaintiffs have referred to "Life-Rails", "tilt-up life rails", "emergency life rails" and "bolt-on life rails". At question 110 Mr. Letourneau was asked as to the nature of the emergency or bolt-on life rail. Emergency or bolt-on life rails are defined in the answer to question 111. Nothing more needs to be done to question 110.
[23] At question 189 Mr. Letourneau was asked when he began putting "pat. pend.", an abbreviation for patent pending, on his product. Counsel for the Plaintiffs correctly points out there is no issue as to the patent pending mark raised in the pleadings. At question 190 counsel for the Defendant agrees with that answer, an exchange ending the matter.
[24] Questions 194 through 201 deal with the colour of the stanchions, a high visibility orange. This exchange is resolved at question and answer 200: the rails are painted orange in order to make them highly visible so that they stand out. Counsel has his answer. Whether the answer will be admissible at trial is another issue.
[25] Questions 766, 767 and 776 deal with use of a wedge device, inside a sleeve, instead of a bolt fastening the stanchions directly onto the outside wall. Those questions are the culmination of a lengthy discussion as to the simplicity of using a wedge device and how it came about, in effect a sequence of evolution from the concept of bolting a stanchion to the wall, to a fastening going right through the wall and finally to the use of a wedging device in a socket cast into the wall. At question 776 counsel asks Mr. Letourneau whether there are any other advantages using the wedge device as compared with bolting the posts to the wall. Counsel for the Plaintiffs characterizes this as a comparison of the advantages of the invention over the prior art.
[26] There is the general proposition that the state of prior art, or common general knowledge, are matters for expert evidence at trial and should not be part of examination for discovery: see Jackmorr Manufacturing Ltd v. Waterloo Metal Stampings Ltd. (1985) 8 C.P.R. (3d) 271 (F.C.T.D.), a decision of Associate Senior Prothonotary Giles. However the present questions as to the advantages of the stanchion are narrower. Counsel for the Defendant referred to Scientific Games Inc. (supra) in which at page 510 I required the Plaintiffs to provide representative proposals which the Plaintiffs had made and which referred to the advantage of an integrity number algorithmically related to accounting information on the front of a lottery ticket. The determination in that case is not strictly on point, for the information was contained in documents which the Plaintiffs had in fact already prepared and as such were completely produceable for what they were worth as evidence. In the present instance counsel did not produce any case law directly bearing on the point of whether a lay witness, but also an inventor, might give an opinion on the merits of two devices which he uses in different versions of the invention and indeed I am not aware of such a case. I will therefore analyse the question in the context of utility.
[27] The Supreme Court of Canada pointed out, in Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd. [1981] 1 S.C.R. 504 at 521 that a patentee does not have the obligation of establishing utility of his or her invention. All the more so, I do not see that the discovery witness has an obligation of giving his or her view as to comparative utilities, that is the advantage of a wedge and socket type fastening to the wall, over a bolting of the stanchion to the wall. Indeed, Fox on Canadian Patent Law and Practice, Carswell, 4th edition, 1969, makes the point that "invention is, however, like novelty and utility a question of fact and degree exclusively for the Court." (page 99). It is thus not for Mr. Letourneau to give his opinion as to the utility of his rail stanchions. Certainly, if there was any written communication or advertisement by Mr. Letourneau, in the course of his business, as to the advantages of the wedge and sleeve system as compared with bolting the stanchions to the wall, that must be produced, but absent such existing material, question 766 and 767 need not be answered.
[28] Question 776 deals with the way in which the wedging system, incorporated into the bottom end of the stanchion, holds the stanchion in the sleeve that has been cast into the concrete wall panel. The question is whether the bolt activated wedging system, at the end of the stanchion, created a sliding friction between it and the insert in the wall. Perhaps a better term would be "locking friction", for any element of sliding frictions would defeat the invention. Counsel for the Plaintiffs objected to this question on the basis that the interpretation of the operation of the patent by the witness was not relevant. The term at issue, "sliding friction", is not one used in the patent, although that is no bar in itself and here I would refer to James River Corp. of Virginia v. Hallmark Cards Inc. (1997 ) 72 C.P.R. (3d) 157 (F.C.T.D.) at page 163 where Madam Justice Reed dealt with terms put to the witness for Hallmark Cards, being terminology that had not been employed by Hallmark. Madam Justice Reed pointed out that it was not appropriate to seek, on examination for discovery, an understanding of or an interpretation of the patent from the point of the view of the witness. However, it was appropriate to ask for facts within the knowledge of Hallmark, for while the witness could not be questioned as to an understanding or interpretation of patent, facts are fair game:
The questions in issue are not of this nature. They ask about the defendant's plates, and the characteristics of those plates, as the defendant understands them. They ask for facts within the knowledge of Hallmark. They are not unlike many other questions that were asked and answered, which questions use terms found in the patent, terms such as lip, rim, scored, side wall, blank of the bottom wall. If the terms, in the questions under dispute, are not used by the defendant, and meaningful answers cannot be given by it, then, those answers will reflect that fact. The defendant is not required to do testing to ascertain the answers. But the questions themselves are not of a type that should be answered.
In effect, it matters not whether the terms used in the question appear in the patent, except to the extent that if the terms are not used by the party being examined and relevant answers cannot be given, then the answers will reflect that fact. However there still remains, in this instance, the question of relevance and I think this may be considered in the context of Mr. Letourneau's knowledge as to how the device works, relying upon his actual experience, not upon an interpretation of the patent. It may be that Mr. Letourneau is able to set out in the factual way how the prototype wedge anchor system for the stanchion worked, although the assessment of mechanical equivalence, would not be proper. Nor would discovery as to commercial success be appropriate as I do not see the relevance of that line of questioning. Indeed the principle of commercial success and its marginal use was commented upon by Mr. Justice Pinard in Équipments d'Érablière CDL Inc. v. Ératube Inc., 2001 CFPI 107, an unreported 23 February 2001 decision in file T-194-98:
Both questions involve consideration of the principle of commercial success. On this point, academic commentary and case law have clearly established that commercial success is only relevant in certain marginal cases and cannot be used as a pretext for "fishing expeditions" (Fox, Canadian Patent Law and Practice, 4th ed., Toronto, The Carswell Company Limited, at pp. 76 and 78, CAE Machinery Ltd., v. Fuji Kogyo Kabushiki Kaisha (January 21, 2000), T-730-97 (F.C.T.D.), Canadian Buttons Limited v. Patrician Plastic Co., 35 F.P.C. 87 and Edison and Swan Electric Light Co., v. Holland (1889), 6 R.P.C. 243, at 277).
A more persuasive point is that an inventor may be asked to specify what he considers to be the substance of the invention, for that is a question of fact and here I would refer to Nolan v. Silex (supra) at pages 214-215:
However, counsel for the defendants satisfied me in argument that apart form the wording of the question, what the defendants, are really trying to do by asking it and by asking similar questions relating to the other claims in the patent is to have the plaintiff identify the essential elements of the inventions, in short, the substance of the invention.
In this instance, while there are authorities which are in favour of answering question 776 and those which are against providing an answer, doubt out to be exercised in favour of an answer as per The Omisalj (supra); moreover, I prefer full discovery, so that there are no surprises; and finally I will rely upon Nolan v. Silex (supra) at page 215:
First, it must be noted that it is proper, at a preliminary stage in the proceedings, to require that a plaintiff specify what it considers to be the "substance of its invention even though ultimately, at the end of the road, it is up to the Court to draw a definitive conclusion on this point (Northern Telecom Ltd v. Reliance Electric Co. (1986), 8 C.P.R. (3d) 224 (F.C.A.),at page 227).
Question 776 is to be answered within the limits of the above discussion being Mr. Letourneau's.
factual understanding as to the workings of the stanchions of which he claims to be the inventor.
Photographs and Observations
[29] Mr. Letourneau took and produced four photographs, of various construction sites and went on to answer factual questions as to those photographs. He said he took the photographs because he believed someone was copying his means of holding the stanchions or guard rails to a building wall. Here I would note that the photographs apparently do not show stanchions in place. Defence counsel then went on to ask Mr. Letourneau how he concluded that there was an indication that someone had, in the past, fastened a guard rail to the wall, a guard rail which embodied a copy of his stanchion device. This crosses the line between factual question and interpretation of or opinion about what is, or may, be illustrated in the photographs. Counsel for the Plaintiffs takes a position that to go beyond factual questions is an attempt to have Mr. Letourneau identify the facts which the Plaintiffs will rely upon in order to establish infringement. Here counsel refers to Kun Shoulder Rest Inc. v. Joseph Kun Violin & Bow Maker Inc. (1997 ) 76 C.P.R. (3d) 488 (F.C.T.D.) and a passage at page 495. However I think a more appropriate starting point is a case referred to in Kun Shoulder Rest, being Aerlinte Eireann Teoranta v. Canada, an unreported 25 July 1984 decision in T-1250-80, upheld on appeal A-972-84 on 26 February 1985. In Aerlinte, Mr. Justice Strayer, as he then was, dealt with a request for a comparison or interpretation of the relationship between airport landing fees and the cost of providing those services: he was not prepared to allow the discovery to go that far, noting that the area could be explored by way of the opinions of experts at trial. He wrote:
The purpose of an examination for discovery is to ascertain the facts on which the other party intends to rely, but not to force a disclosure of the evidence by which those facts are to be determined: see e.g. Beloit Canada Lteel Ltd v. Valmet Oy (1981), 60 C.P.R. (2d) 145. Opinion evidence is just that: it is a means of establishing a fact, but it is not the fact itself. Only if the competence of the expert is itself in question can the opinion be explored on examination for discovery: The Queen v. Irish Shipping Ltd., [1976] 1 F.C. 418 (C.A.); Rivtow Straits Ltd v. B.C. Marine Shipbuilders Ltd., [1977] 1 F.C. 735 (C.A.). Basically the facts obtainable on discovery are those "patent to the senses": Bestway Lath & Plastering Co. v. McDonald Construction Co. (1972), 31 D.L.R. (3d) 47 (N.S.C.A.). In the present case the facts are the recorded costs as they appear in the data provided by the defendants. It appears to be common ground that any "allocation" of these costs to each of the three sectors will have to be based on an estimate. No matter how well-informed or logical that estimates may be, in my view it will be an opinion. It will form part of the evidence by which the plaintiff presumably will seek to establish the discrimination and excessive charges alleged in their pleadings.
In Kun Shoulder Rest I summarize some of this by writing:
It is proper to ask witness to speak of all the facts, surrounding a certain incident, of which the witness either knows or must properly inform himself or herself about. It is never permissible to ask a discovery witness as to the facts relied upon in support of a certain allegation, for this requires the witness to choose facts and disclose how his lawyer might prove a given allegation. While a witness may know the general approach that his or her lawyer intends to take, a witness cannot know what facts will assist until he or she knows the law. The particular facts that will be relied upon are based upon counsel's view of the law. An examination for discovery of a witness seeks to discover fact, not argument as to what is relevant in order to prove a given plea.
This concept, of allowing a discovery witness to set out facts, or what he or she has observed, surrounding a relevant incident, is a proper approach to discovery, but an interpretation of or a choosing or selecting of appropriate or relevant facts by the witness is an improper approach to discovery. This is an answer to the Defendant's application for answers to Questions 288 and 289, in which Mr. Letourneau was asked to say why he felt that certain patches on a building wall, constructed by someone else, might indicate a copying of his stanchion attachment procedure. The answer might be different if Mr. Letourneau had in fact set out in a produceable document a conclusion that he had reached, for the document itself would be a fact and produceable for what it was worth. Here he is asked for something less concrete: indeed being asked, as a lay person, to choose facts and then interpret them, something a witness should not be asked to do. Rather that is the job of the lawyer acting for the witness for he or she will be able to determine what facts are relevant, by reason of a knowledge of the law. The Defendant has received on discovery that to which it is entitled, the facts observed and those observable from the photographs and that is a complete answer to refusals to questions 288 and 289.
[30] By question 290 Mr. Letourneau is asked to name who may have placed the guard rails on a building in a photograph. Mr. Letourneau, who by this point in the discovery had clearly picked up some of the ground rules, said he did not know for certain and concluded "I mean I can speculate, but that's not what we're supposed to do here.". At this point counsel has an answer to the effect that Mr. Letourneau does not know, for certain, who placed the guard rails. Certainly if that answer proves, in retrospect, to be incomplete, or to result in the Defendant being misled, or indeed to potential ambush at trial, Mr. Letourneau has an ongoing obligation, just as production of documents is ongoing, to advise defence counsel, through his own counsel, of the incompleteness or incorrectness of the answer. At this point questions 288 and 289 need not be answered and questions 290 and 295 need only be dealt with further should Mr. Letourneau decides that his answers had become incomplete or incorrect.
Prior Disclosure in August 1997
[31] In Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd. (2002 ) 17 C.P.R. (4th ) 478 the Court of Appeal dealt with invalidity, by way of anticipation, being disclosure in a relevant manner. In effect the patent was said to be invalid because it had been disclosed to and made available to the public, in breach of section 28.2 of the Patent Act which requires that the subject matter of an application for a patent must not have been disclosed more than a year before the filing date of the application for the patent and that by s. 28.3 of the act, if there has been disclosure more than a year before the filing date for the patent, the patent is invalid. All of this is discussed at length in Baker Petrolite at page 497 and following, where Mr. Justice of Appeal Rothstein wrote in part:
For a prior sale or use to anticipate an invention, it must amount to "enabling disclosure."
Hughes & Woodley on Patents, Butterworths looseleaf edition, s. 16A defines an enabling disclosure to be such that "it must enable the public to make or obtain the invention.". From this I take it that the test is merely one of making the invention available and that it is not necessary that there be an actual making or obtaining of the invention by the public, but merely the opportunity available to some unauthorized person. Indeed this is a point made by Mr. Justice Rothstein, in Baker Petrolite, at page 499, there relying upon Lux Traffic Controls Ltd. v. Pike Signals Ltd. [1993] R.P.C. 107 at 133:
Further it is settled law that there is no need to prove that anybody actually saw the disclosure provided the relevant disclosure was in public. Thus an anticipating description in a book will invalidate a patent if the book is on a shelf of a library open to the public, whether or not anybody read the book and whether or not it was situated in a dark and dusty corner of the library. If the book is available to the public, then the public have the right to make and use the information in the book without hindrance from a monopoly granted by the state. [Emphasis added.]
It is therefore the view of the Federal Court of Appeal that the patent may be invalidated by disclosure whether or not anyone actually looked at the item in question when it was displayed: the test is merely whether the device, to be patented, was available had anyone looked.
[32] Mr. Letourneau had a prototype of the square tubular steel stanchion fabricated by Aggressive Tube Bending, in Surrey, British Columbia. At question 1004 Mr. Letourneau was asked for a rough description of the layout of the Aggressive Tube Bending shop. It is clear that counsel initiated this subject because Aggressive Tube Bending manufactured both the prototype and the subsequent stanchions over a year before Mr. Letourneau applied for the patent. The prototypes were kept at the Aggressive Tube Bending shop for a time until Mr. Letourneau picked them up. The layout of the shop is an appropriate line of questioning: for example the prototypes might have been kept at a location in the shop where members of the public could have seen or examined a stanchion. Question 1004 shall be answered, together with any proper questions flowing from that answer, however Mr. Letourneau is not to speculate as to the exact layout at Aggressive Tube Bending, for discovery is as to facts, not as to guesses or speculations. This leads to the demonstration of the stanchions at what is called the Beedie Building and questions 1167 through 1168, 1170, 1171, 1174, 1175, 1178 through 1179, 1196 and 1204, all related to the Beedie Building and the area around it.
[33] At questions 1167 and 1168 Mr. Letourneau was asked to recall the street arrangement near Bainbridge Avenue, which I take it to be the location of the Building. I accept from the transcript that Mr. Letourneau does not have a clear recollection of the street layout around the Beedie Building. Indeed, neither the witness nor the counsel seem certain whether one of the adjacent roads is parallel to the building or is a diagonal road. There is no point in having Mr. Letourneau guess. If the issue is important, the roads are still likely there and counsel can have someone else give evidence on the point. Questions 1167 and 1168 need not be answered. Question 1170 deals with the same road, possibly a diagonal road: the question need not be answered.
[34] At question 1171 counsel for the Defendant asked Mr. Letourneau as to the distance between the street and the Beedie Building. Here I accept that to the extent that Mr. Letourneau is able to give estimates of distances from the building to various roads that is relevant, so far as disclosure of the device is concerned such estimates and opinions of distance, even by a witness who is not an expert, are appropriate: see Graat v. The Queen [1982] 2 S.C.R. 819 at 835. Thus questions 1171 and 1174 must be answered.
[35] By question 1175 counsel asked whether Mr. Letourneau observed any traffic on the roadway the day the stanchions were demonstrated on the Beedie Building. The presence or absence of traffic on the road, depending upon the distance from the building to the road, might well be relevant to the issue of disclosure. Question 1175 is to be answered.
[36] Questions 1178, 1178 and 1196 deal with distance, parking of Mr. Letourneau's truck and road layout. On the basis of Graat (supra) the best estimate of a distance is appropriate. However, it may be that Mr. Letourneau cannot give more than an estimate within a range, that being the issue at question 1196 and following. It is fairly clear that the counsel has the best answer that is available and if he needs more he can always send some other witness out to make an actual measurement. To the extent questions 1178 and 1179 are relevant, counsel has an answer. Thus questions 1178, 1179 and questions 1196 and1204, another attempt to get a better estimate, need not be further answered.
[37] Question 1243 is the culmination of an explanation as to how a stanchion is put in place when a sleeve is not cast into the wall panel, but rather the stanchion is held in place by a bolt. Mr. Letourneau explains that the bolt, which is apparently, using the everyday vernacular, a patent bolt in the sense of an ingenious bolt or one to which there might be a propriety claim, is not screwed into the wall, but rather slid into a hole in the wall and then tightened up. The answer is clear. Mr. Letourneau need not elaborate on the method of putting the bolt in place, for that has been accomplished leading up to question 1243.
[38] At question 1276 Mr. Letourneau was asked what he did to impress upon others, who attended the demonstration of his stanchions, that matters concerning his invention were confidential or private. Here counsel for Mr. Letourneau is concerned that his client may not have said to others "this is confidential" but that the situ